Regulations on Patent and Annuity Fees Revised

The Korean Intellectual Property Office (KIPO) is preparing to revise its regulations by increasing the request for examination fees and decreasing annuity fees. In order to alleviate the backlog of patent examinations, the KIPO will nearly double the current request for examination fees, as follows:

A) Current Request for Examination fee:
Initial fee of KRW 141,000 plus [(number of claims - 1) × KRW 32,000]

B) Revised Request for Examination fee:
Initial fee of KRW 250,000 plus [number of claims × KRW 60,000]

By way of reference, in case ten (10) claims are requested for examination, the present request for examination fee is KRW 429,000 (approximately US$ 373.00). When the revised regulations are finalized, the fee for ten (10) claims will increase to KRW 850,000 (approximately US$ 740.00). Meanwhile, the revised annuity fees will be reduced by 20-25% from the current annuity fees. A draft on the revised regulations on patent fees will be implemented sometime around the end 2003 after hearings are conducted.

Reinforced Penal Provisions on Importation of Goods Infringing on Intellectual Property Rights

The Korean Trade Commission (KTC) of the Ministry of Commerce, Industry and Energy (MOCIE) recently advanced a revised draft bill entitled "Investigation of Unfair International Trade Practices and Remedy Against Injury to Industry" in order to reinforce disciplinary actions against importation of goods related to unfair trade behaviors such as patent infringing goods and the like. The draft bill was presented in the June 2003 session of the National Assembly meeting for possible implementation this coming October 2003.

According to the bill, once the KTC determines that an imported article has violated a fair trade practice for infringing upon an intellectual property right, a decision will be made to suspend the importation and customs clearance will be deferred against the relevant goods. Further, an importer of the encroaching goods must either return or voluntarily dispose of the goods within 30 days from the date of the decision. Failure to do so will result in compulsory disposal of the relevant goods by the Customs Office.

The draft bill is of significant importance because it provides that articles of goods which have once violated an intellectual property right cannot be domestically entered through the Customs Office when it was determined that the article had been imported in violation the Unfair Trade Act. Through investigation by the KTC, importation of infringing goods have markedly increased lately.

Penal provisions under the current law relating to relief measures against industrial damage have drawbacks in that other future importers may repeatedly bring in the same infringing items even after legal actions are taken against the original importer of the infringing goods. Under the revised bill, however, penal provisions will be sanctioned against the goods itself.

Finally, according to the revised bill, the penalty limit for unfair trade practices, such as infringing intellectual properties or other obstructions of imports and exports, will drastically increase from 2% to 50% of the revenues due to unfair trade practices.

Amendments Made to the Copyright Act

Major changes to the Copyright Act were recently approved by the National Assembly to protect invested efforts on manufacturing of databases, digital contents and the like, to provide reinforced protection in relation to digital network environments, and to clarify the scope of liability of online service providers in case of copyright infringement via the Internet. The revised Copyright Act is slated to take effect on July 1, 2003. The amendments to the Copyright Act are provided as follows:

1) Only databases having a certain level of creativity were conventionally protected under the former Copyright Act. Under the revised Copyright Act, anyone who produces a database and has invested a considerable amount of money in revising, verifying or supplementing said database shall enjoy the right of reproduction, distribution, broadcasting and transmission of the relevant database for up to five years.

2) A library institution may allow users to reproduce books and documents within a restricted scope by charging a predetermined amount of compensation payable to the copyright owner as stipulated by the Ministry of Culture and Tourism.

3) A facility established with a view to promoting welfare for visually impaired and blind persons may record literary works or reproduce, distribute or transmit recorded works for noncommercial purposes.

4) Where an online service provider ceases reproduction and transmission of copyrighted materials in relation to literary works, performances, phonograms, broadcastings and databases after realizing infringement by a third party, the online service provider's liability will be either reduced or exempt. This provision was added to allow online service providers to stably manage today's information technology society.

5) Any person who provides, manufactures, consigns, lends and/or transmits techniques, services, devices and principal parts thereof with a main object of neutralizing technical protective measures for preventing copyright infringement shall be punished by imprisonment for not more than three years or a fine not exceeding thirty million won.

6) In a case where it was difficult to calculate the number of illegal reproductions, the number of illegal reproductions was deemed to be of five thousand copies in the case of publications, and ten thousand copies in the case of phonograms according to the former Copyright Act. Now, a new provision allows the court to approve of the amount of damages based on the details of the arguments and evidence introduced at trial, if the exact amount cannot be estimated.

Supreme Court Holds that "RobertoRicci" and "NINA RICCI" are not Confusingly Similar

On January 10, 2003, the Supreme Court of Korea ruled in Nina Ricci SARL v. Louis Y. Feruccio that the French-owned trademark "NINA RICCI" and the Italian-owned trademark "RobertoRicci" were not confusingly similar in relation to the respective goods and reversed the Patent Court's invalidation decision.

The Korean Patent Court had originally invalidated the Korean trademark "RobertoRicci" and held that it was confusingly similar with the cited mark "NINA RICCI". In the decision, the Patent Court indicated that the "Roberto" and "RICCI" portions in "RobertoRicci" are divisible and the "NINA" and "RICCI" portions in "NINA RICCI" are likewise divisible, and thus, the Court found the two marks to be confusingly similar.

The Supreme Court of Korea then reversed the lower court's decision and held that "NINA RICCI" should be considered in its entirety and not by its individual components. The Court went on to add that although "NINA RICCI" has a certain level of fame in the Korean marketplace, and its goods are not known to general consumers simply as "RICCI".

Supreme Court Holds that "Christian Daniel" and "Christian Dior" are not Confusingly Similar

The Supreme Court of Korea ruled on February 14, 2003 that the Korean-owned trademark "Christian Daniel" and the French-owned trademark "Christian Dior" were not confusingly similar and reversed the Korean Patent Court's invalidation decision.

The Korean Patent Court held that the trademark "Christian Daniel," the subject of invalidation, was confusingly similar to the cited marks "Christian Dior" and "CD Christian Dior" in relation to the relevant goods.

The Patent Court also commented that the "Christian Dior" trademarks are famous among general consumers of Korea and merchants of bags, wallets and clothing. Even though the designated goods of shoes, umbrellas, sun umbrellas, walking sticks and fans of the "Christian Daniel" trademark and the designated goods of bags and clothing of the "Christian Dior" trademarks are classified under different classes, in view of the overall fashion industry, it is common for an enterprise to produce various goods in different fields. In fact, many companies engage in business in broad areas, such as clothing, bags and shoes which are all fashion-related.

The Supreme Court, however, reversed the decision of the Korean Patent Court for the following reasons:

The respective marks all have the "Christian" portion in common. However, the term "Christian" is devoid of distinctiveness in that it is frequently used by general Korean consumers and merchants who recognize the word as "a person who believes in the teachings of Christ or belongs to a Christian church." On the other hand, "Daniel" and "Dior" are different in pronunciation, appearance and meaning. Furthermore, the two-letter portion "CD" is commonplace and found in ordinary language usage. Hence, the "CD" portion is regarded as being descriptive and has no significance in the determination of the likelihood of confusion issue. Consequently, both marks are not likely to confuse the general consumers of Korea as to their origin.